Burberry claims Target scarves infringe on trademark

Burberry claims Target scarves infringe on trademark

A trademark is a symbol word or phrase used by the producer of a product to distinguish their products from the products of other producers.  A trademark signals to consumers who made a products.  In the United States, a trademark owner is granted the exclusive right to brand products produced by them with their trademark.  Registering a trademark with the United States Patent and Trademark Office strengthens the trademark and grants the trademark owner additional rights, but registration is not a condition precedent to being granted trademark rights.   If someone other than the trademark owner brands products in a way that causes consumer confusion, that could be considered trademark.  A trademark owner can sue to stop trademark infringement with an injunction and for monetary damages for trademark infringement which has already occurred.

A trademark is only as strong as the association consumers makes between a manufacturer and a product.  A trademark owner must diligently police how their trademark is used.  If a trademark owner does not object to other people using their trademark then the trademark owner risks loosing their right to the trademark.

A case which illustrates a trademark owner policing the use of their trademark is Burberry Limited et al v. Target Corporation et al,  1:18-cv-03946 (S.D.NY 2018).  Burberry is a globally recognized luxury clothing brand.  Burberry has a signature red, camel, black and white check color pattern which is registered as a trademark with the United Stats Patent and Trademark Office.  Consumers probably associate the Burberry check pattern with scarves but the Burberry Check pattern is applied to many different products and serves as a source designation.  Target is a global retailer of products.  In 2017 Burberry discovered products such as water bottles and eye glasses with pattern very similar to the Burberry check for sale through Target.  Burberry sent a cease and desist letter to Target asking the retailer to stop selling products with a pattern which resembled the Burberry Check pattern.  When Target did not stop selling the products with the similar check pattern and added scarves with similar check pattern, Burberry filed a trademark infringement lawsuit.

Burberry alleges that Targets actions constitute Trademark Counterfeiting, Trademark Infringement, False Designations, Trademark Dilution under 43(c) of the Lanham Act, Deceptive Acts and Practices Under Section 349 of New York General Business Law, Trademark Dilution and Likelihood of Injury to Business Reputation Under Section 360-l of New York General Business Law and various common law causes of action.  Burberry requests that the court order Target to stop selling products which bear the pattern which is similar to the Burberry Check, destroy any products that have not been sold, pay Burberry damages for trademark infringement and pay Burberry’s attorneys fees.

Target has not filed their answer to Burberry’s complaint yet, but they will have the opportunity to do so.  The facts of this case seem very cut and dry so it is likely the case will settle, but it will be interesting to see what defenses Target asserts in its answer.

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